Back in December we covered the Federal Circuit's opinion in Tomita v. Nintendo, where the Court found that the claim term "offset presetting means" clearly invoked the means-plus-function principles of 35 USC 112 6th par. Tomita sued Nintendo in 2011 over U.S. Pat. No. 7,417,664, "Stereoscopic Image Picking Up and Display System Based Upon Optical Axes Cross-Point Information." Tomita alleged that Nintendo's 3DS game system infringed the '664 patent with its stereoscopic 3D display system which provided glasses-free 3D images.

The Federal Circuit held that the trial court improperly adopted the claim construction proposed by Tomita's expert which failed to reference the corresponding structure defined in the specification. The Court remanded the case with instructions that the lower court should properly construe the claim term as limited to the corresponding structures defined in the specification and equivalents thereof, based on the clear invocation of 35 USC 112 6th par.

Per IP Law 360, the parties recently argued their positions on proper construction of the claim terms and the issue of infringement on remand to the trial court. Tomita argued that Nintendo's 3DS products include the same structures disclosed in the '664 patent and that Nintendo's construction unnecessarily complicated the nature of the structures described therein. Nintendo argued that Tomita's patent disclosed primitive presetting means and that the 3DS products used very different components.

Tomita originally received a jury verdict in its favor February 21, 2014 awarding them over $30 million in damages. If the trial court finds that Nintendo still infringes the properly construed claims on remand, it is likely that the jury's damages will remain intact.

Prior to the Federal Circuit's order, Tomita filed an additional lawsuit against Nintendo on December 3, 2014 based on the newly launched 3DS XL. (SDNY Case No. 1:14-cv-9560). The earlier case against the regular 3DS remains pending after the remand. (SDNY Case No. 1:11-CV-04256).

We will continue to monitor this case and report when the trial court issues its opinion.